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The first week of July 2017 comes up with a paradigm in patent licensing when two global cellular technology leaders, Telecoms network equipment maker Nokia and Chinese smartphone maker Xiaomi announced business collaboration and a multi-year patent agreement, including a cross-license to each company’s cellular standard-essential patents.

The iconic Taj Mahal Palace hotel in Mumbai has acquired an ‘Image Trademark’ under the Trade Mark Act 1999 for its architectural design. This is the first ever building in the country which got an intellectual property rights protection under the Image trademark. The move was motivated to protect the distinctiveness of the building’s legendary image & structure.

The new Trademark Rules have come into force on 6th March 2017¬ owing to the exponentially increasing number of trademark applications in the country. One of the most notable, as well as exceptionally priced amendments, is enumerated under Rule 124 of these new rules that have completely transmuted the procedure for the registration of a Well-Known Trademark.

The British pop music sensation, Ed Sheeran, yet again faces charges of infringement as the successors of Marvin Gaye, sued him, claiming that his hit record “Thinking Out Loud” infringes the song “Let’s Get It On”, which was composed by Gaye. The law suit has been filed in the Southern District of New York. The successors of the singer have claimed that Ed Sheeran had copied key elements of the aforementioned music track in his own song.

This would mark the second complaint of copyright infringement against Ed Sheeran in the last few months, before this he was sued for his song “Photograph”. The present lawsuit against him is for damages. The grounds of infringement are on the harmonic progression and melodic elements of Gaye’s “Let’s Get It On” formed the basic structure of the song “Thinking Out Loud”.

MARKET ENFORCEMENT

Raids are conducted on the premises of Factories, Manufacturing Locations, Assembling Locations, Showrooms, Retailers, Warehouses, Wholesalers and Stockists where infringing or counterfeit goods are stored or found.

Step 1 Investigation & Sighting Report

Sighting report is based on investigation and contains the following details:

Name & Address of the premises/people involved in infringing/counterfeit goods

Relevant Jurisdiction

Type of Business Activity (manufacturing/ wholesale/ retail)

Estimated Quantity

Photographs of the products/location

Proposed legal action – civil or criminal

Estimated time in conducting the legal action

Estimated costs.

Step 2 Determination of appropriate Course of Legal Action

Civil Action – involves filing of a civil suit for injunction, damages and search and seizure action through the assistance of Court Commissioner. An ex-parte injunction order is obtained and a raid is organised & executed. Damages are claimed against the infringer, however, there are no arrests made. Seized goods are destroyed after complete adjudication of the case.

Criminal Action – includes search & seizure action directly through the police. In case of a criminal action, the accused is imprisoned; however, the claim of damages does not subsist. Goods are stored in the police warehouse and subsequently destroyed.

Step 3 Execution of Raid by United IPR

Lawyers who are well versed with the product identification

Support staff to obtain photos/videos and assist in the search & seizure action

Court Commissioner (only in cases of Civil Action)

Investigators

Representative/s of the right-holder (upon right-holder’s discretion)

Police Officials from the concerned jurisdiction

ONLINE ENFORCEMENT

The boundless growth of Internet and its accessibility to people across the world has led to a huge increase in IPR violations and related issues over the Internet. Enforcement of Intellectual Property over the Internet is a sphere which we undertake with utmost sincerity and dedication. IPR violations over the Internet have seen a huge increase in the last half a decade with the upspring of newer business models such as e-commerce platforms and marketplaces and we have kept pace with it.

We have a separate department within our organization dealing with Internet Violations which specifically deals with IPR violations taking place over and through various means on the Internet. Our Internet Violation Department deals with the following matters:

Internet Counterfeiting/ Sale of Fakes over Internet

Other forms of IPR Infringement over the Internet

‘Intermediary’ Liability

Domain Name Disputes (Cyber-squatting)

Infringement of Design/Trademarks/Copyrights on the World Wide Web

Mala fide Registration of Fake Email-Ids

E-commerce IPR violations

We provide the following services –

Dedicated Internet Monitoring Services

Arranging & Conducting Test/Trap Purchases

Drafting & Serving Cease & Desist Legal Notices

Drafting & Serving Take-Down Requests

Reporting IPR Violations

Take-Down/Blocking of Listings and URL(s)

Filing Cyber Complaints with Cyber Cell, Government of India

Carrying out Domain Name Disputes Arbitration (NIXI & UDRP)

Filing Cases and Litigation in Courts

Negotiation and Settlement

Dedicated Internet Monitoring Services

Our dedicated monitoring team comprising of paralegals and web analysts regularly carry out comprehensive scanning and analysis of the Internet to flag instances of counterfeiting and/or infringement of the IP Rights of our clients.The efficient monitoring system with double checks and balances ensures that right-holders can be free of the burden of conducting such due-diligence themselves and ensures that no infringement goes un-noticed.

We also provide end-to-end services towards conducting and arranging Test Purchases from websites and online sellers which acts as key evidence.

Drafting and Serving of Legal Notices

Our team of Attorneys and Lawyers provide expert services towards drafting and serving Cease & Desist Legal Notices on websites and other online infringers as per the needs of the client and applicable case facts and law.

The team is well-experienced in dealing with complex issues of claim drafting and responding to replies of notices in the form of rejoinders and replies which are key towards the rights of clients.

Enforcing IP Rights through Litigation

For Online Infringers which are not inclined towards giving up the acts of infringement even after Legal Notices and warning letters, we provide end-to-end services towards filing and pursuing litigation (civil and criminal remedies) before the appropriate Courts/Tribunals across the country.

We provide Legal Solutions against all the following types of Entities/Operators existing in the Online Space –

E-Retail Websites

Marketplace Websites (Intermediary Model)

Social Media Websites

Comparison Websites

Cyber – Squatters (Domain Name Infringements)

Social Media

Social Media Websites or platforms have become common medium for operation of business activities. Such social media platforms provide space for advertisement and outreach to substantial range of public at very low prices. Organizations operate by the mode of creating dedicated profiles or pages on such platforms and then advertising the same with the aid of these platforms.

After obtaining injunction order on behalf of the right-holders from the Courts, we send take down requests to social media websites to remove the infringing contents. A team of paralegals and lawyers dedicatedly work to cover ground against counterfeiting and infringement through Take-Down Requests to these platforms.

Comparison Websites

Comparison websites is a relatively newer model which has come up in recent times. These websites do not maintain a list of sellers and products themselves, but instead provide services wherein the user can compare the rates/prices at which a particular product is being sold by different, existing ecommerce websites. Such websites incur liability as they are engaged in providing a platform to the sellers for display and advertisement of their products over the internet.

Cyber – Squatters

Cyber squatting is the act where the infringer/counterfeiter registers a domain name which is same or similar to a popular registered trademark over which he himself has no rights. The infringer does this, with the intention of deceiving the public and projecting himself as the rightful owner of the said trademark/brand. E.g. an infringer can register a particular domain name and deceive online buyers into believing that name by unfair means.

This qualifies as trade mark infringement, which can be resolved as per –

Social Media has seen exponential growth in the past decade. In this short span of time it has been increasingly clear that whether one frequently uses it or not, the power of a click of button goes beyond something so innocently simple. Various crimes are now being conducted via such websites and IP infringement being on the topmost list. In our firm, we understand the need of the hour and study the current trends of crimes being committed in such social platforms and strive to provide our clients the best legal protection one can hope to find.

CUSTOM ENFORCEMENT

On May 8, 2007, the Central Government issued Notification No. 49/2007-Customs (N.T.) that prohibited the import of certain goods subject to the conditions and procedures as specified in the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007.

The Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 came into existence to strengthen the statutory and executive guidelines provided for the protection of intellectual property rights at the borders. These Rules have been formed based on the line of TRIPS (Trade-Related Aspects of Intellectual Property Rights) and WCO (World Customs Organization).

Under the Rules, infringing goods are defined as “goods which are made, reproduced, put into circulation or otherwise used in breach of the intellectual property laws in India or outside India and without the consent of the right holder or a person duly authorized to do so by the right holder”. The rules define intellectual property law as “the Copyright Act, 1957, the Trade Marks Act, 1999, the Patents Act, 1970, the Designs Act, 2000 or the Geographical Indications of Goods (Registration and Protection) Act, 1999”.

Step 1:

Registration with Customs – Filing Application and obtaining Unique Temporary Registration Number – approval from the Commissioner of Customs – grant of Unique Permanent Registration Number

Step 2:

Suspension of Clearance of suspected infringing goods by the Customs either on notice by the right holder or suo moto by the Customs.

Step 3:

Examination of alleged infringing goods and submission of Authenticity Report by the Right-holder

Step 4:

Execution of Surety Bond at 110% of the Assessed Value and Security Deposit by way of Bank Guarantee or Fixed Deposit at 25% of the Bond Amount by the Right-holder in favour of the Commissioner of Customs.

Step 5:

Adjudication by Customs Authority

Show Cause Notice

Hearings

Order for Absolute Confiscation of Infringing Goods, Penalty on Importer or Disposal / destruction of infringing goods

United IPR implements border protection measures for IPR enforcement as a ‘Knowledge Partner’ with Indian Customs and imparts training in cooperation with

World Custom Organization (WCO)

Asian Coalition Against Counterfeiting And Piracy (ACACAP)

European Communities Trademark Association (ECTA)

Business Action Against Counterfeiting And Piracy (BASCAP)

About Us

United IPR is a full service Intellectual Property Law firm based in New Delhi having more than 60 years of experience which includes specialized practice and knowledge of Trademarks, Patents, Copyrights, Designs, Information Technology Laws, Start-up Advisory and IPR Valuation.

Our team of lawyers are equipped with expertise on diverse legal practices required to assist clientele which ranges from Global Fashion brands, Multinational Companies, Innovation Centers to Indian Government & Academic organisations. United firm works as a one stop platform for all legal solutions including IPR Search, Market Enforcement, Analyzing Business Feasibility, Providing Startup Advisory, IPR protection, Drafting of Contracts, Policies and Agreements among other diverse aspects of Intellectual property laws.